A recent US verdict focuses the mind on the importance of securing trade mark, domain name and other necessary rights before publicly announcing business plans. Ray Coyle reports.
Topic: Domain names
Who: WIPO Arbitration and Mediation Centre (the "Panel")
When: 26 February 2008
Where: USA
Law stated as at: 7 April 2008
What happened:
Fox News Network LLC ("Fox") is a subsidiary of Fox Entertainment Group and ultimately of News Corporation. The group owns a large number of "Fox" trade marks, many of which are three word marks starting with the word "Fox", the second word generally describing the nature of the programming or audience and the third word being either "Network" or "Channel". Examples are "Fox Kids Network" and "Fox Sports Radio Network".
It had been widely rumoured for several years that Fox planned to launch a 24 hour business news channel. On 8 February 2007, Rupert Murdoch announced the planned launch of a business channel in the fourth quarter of 2007. This was referred to as the "Fox Business Channel" in the press release. Also on 8 February 2007, Worldwide Directory Services ("WDS") registered the "www.foxbusinessnetwork.com" domain name.
It was not until the 22 February that Twentieth Century Fox applied to the US PTO to register the mark "Fox Business News" and the mark "Fox Business Network" was not applied for until much later, on 16 July.
In the meantime, WDS began using the domain name to offer internet advertising and marketing services. While both parties agreed that the CEO of WDS telephoned Fox on 20 August to discuss the domain name, they did not agree the substance of that call. Fox maintained that WDS had offered to sell the domain for $50,000 while WDS maintain that this figure was merely given to illustrate the costs incurred in developing the site.
From 1 October 2007, Fox posted business channel content to the web site www.foxbusiness.com. Fox also made a complaint under the WIPO Uniform Domain Name Dispute Resolution Policy ("UDRP").
Three point onus on Fox
In order for Fox to succeed in the claim before the Panel, they needed to demonstrate, under para. 4(a) of the UDRP rules, that:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel agreed that, given the large number of trade marks registered by Fox and containing the words "Fox" and/or "Network", that the first criterion above was satisfied.
However, it was on the second element that the Fox claim failed as WDS was able to provide some limited evidence of its use of the words "Fox Business Network" as an unregistered service mark since 2002 by providing printouts of a web page which stated that "Fox Business Network is a service mark of Worldwide Directory Services". These printouts could not be verified as WDS claimed they were generated by an off-line database and no public archive existed. WDS also produced declarations from the president of WDS and a single customer to back up their assertion that the service mark had been legitimately used.
Although Fox contended that the evidence submitted was not genuine, the Panel were unable to find "compelling reasons to conclude that it was fabricated". As Fox had failed to convince the Panel in respect of the second requirement, the third was not considered.
Why this matters:
It seems clear from the transcript that the Panel was less than entirely convinced by WDS's evidence, describing it as "slender". However, the Panel was not able to find that Fox had met its "overall burden of persuasion" on the second element of the complaint. This does illustrate the difficulties faced by complainants under the WIPO Rules. It is always going to be difficult to prove a negative, particularly given the Panel's assertion that it must have "compelling" evidence before concluding evidence has been fabricated.
Face value weakness?
The Panel also highlighted another aspect of the UDRP procedure that they follow in cases such as this. Because all evidence is submitted in writing, there is no cross-examination of witnesses, expert testimony or opportunity for the Panel to assess the credibility of the various witnesses. Where the evidence provided by one party is slender, largely unsubstantiated and disputed, the Panel do not have any real opportunity to test that evidence and, as happened here, seem to take it on face value. As the Panel themselves pointed out in the ruling, the testing of the veracity of witnesses or the authenticity of documentation is better carried out by a court. Unfortunately, that will prove to be a far more expensive option for Fox to pursue.
The other lesson to be learnt is the importance of securing trade mark, domain name and other necessary rights before publicly announcing business plans. Had Fox ensured that they had done this, they may have been able to prevent this problem from ever arising.
